Covidien AG v. zhaozhongli
zhaozhongli c/o zhaozhongli
Claim Number: FA0810001231649
PARTIES
Complainant is Covidien AG (“Complainant”), represented by James
R. Menker, of Holley & Menker, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <covidien-china.com>, <covidien-china.net>
and <covidien-china.org>,
registered with Web Commerce Communications Limited d/b/a Webnic.cc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 29, 2008; the
National Arbitration Forum received a hard copy of the Complaint on October 30, 2008.
On October 31, 2008, Web Commerce Communications Limited d/b/a Webnic.cc
confirmed by e-mail to the National Arbitration Forum that the <covidien-china.com>, <covidien-china.net>
and <covidien-china.org>
domain names are registered with Web Commerce
Communications Limited d/b/a Webnic.cc and that the Respondent is the
current registrant of the names. Web Commerce Communications Limited d/b/a Webnic.cc
has verified that Respondent is bound by the Web
Commerce Communications Limited d/b/a Webnic.cc registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On November 10, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 1, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@covidien-china.com, postmaster@covidien-china.net and postmaster@covidien-china.org by e-mail.
A Response was received in electronic format only and not in hard copy
on December 1, 2008. The Response is therefore considered incomplete
under ICANN Supplemental Rule 5(b).
On December 8, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David S. Safran as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has contended that it
currently uses the mark COVIDIEN in connection with a wide-range of medical and
health-care related products and services, that it owns numerous Swiss
trademark registrations, has filed numerous Chinese trademark applications and
has filed numerous U.S. and Hong Kong trademark applications, a number of which
have matured into registrations and all of which contain the word COVIDIEN as
all or part of the mark. Complainant
also contends that “Covidien” is a coined term and is an inherently distinctive
mark as applied to the Complainant’s goods and services, that “Covidien” is not
a term that can be found in any dictionary in any language, and that
Complainant’s COVIDIEN mark is confusingly similar to the second level domain
name in the disputed domain names <covidien-china.com>, <covidien-china.net> and <covidien-china.org>.
Complainant states that the only difference between the COVIDIEN mark and the
disputed domain names are the inclusion of the geographic identifier “
Complainant also asserts that Respondent has no rights or legitimate interests to the <covidien-china.com>, <covidien-china.net> and <covidien-china.org> domain names, that Respondent’s use of, or demonstrable preparations to use, the domain names or any name corresponding to the domain names does not constitute a bona fide offering of goods or services. Complainant also contends that Respondent does not own any trademark rights in the subject domain names and is not commonly known by the subject domain name, and is not making legitimate noncommercial or fair use of the domain names, the domain names being used for commercial gain by attempting to mislead Complainant’s customers and potential customers into believing that Respondent is affiliated with Complainant and/or that he is authorized to sell Complainant’s products, some of which are being sold at the websites maintained at the <covidien-china.com>, <covidien-china.net> and <covidien-china.org> domain names.
Complainant also contends that Respondent has registered and used the subject domain name in bad faith because the domain names <covidien-china.com>, <covidien-china.net> and <covidien-china.org> were registered on November 28, 2007, after the Complainant began commercially using the COVIDIEN mark in connection with medical and health care related products and services, after Complainant had been granted trademark registrations for its mark in over eleven countries and in Hong Kong and after Complainant had filed applications in dozens more countries including China so that Respondent either knew or should have known (by reason of the Complainant’s numerous registered trademarks and constructive notice thereof) that its registration and use of the disputed domain would be infringing upon Complainant’s trademark.
Complainant also asserts that Respondent’s
use of the <covidien-china.com>, <covidien-china.net> and <covidien-china.org>
domain names is likely to create confusion among customers and potential
customers in China and elsewhere who are searching for Complainant’s business
or its products and that Respondent’s manner of use of the disputed domain names
will likely lead to confusion among Internet users as to Complainant’s
sponsorship of or affiliation with the resulting website and disputed domain
names.
B. Respondent
Respondent contends that when Covidien was a subsidiary of Tyco, it was
to be the Tyco product sales representative of Covidien. Respondent also contends that the domain
names <covidien-china.com>, <covidien-china.net>
and <covidien-china.org>
are different from the COVIDIEN trademark which was not officially registered in the
Preliminary Issue –
INCOMPLETE Response
The Response is considered
deficient because it was not received by the National Arbitration Forum in hard
copy pursuant to ICANN Supplemental Rule 5(b).
Nonetheless, the Panel is free to consider the Response. See, Clear!Blue Holdings, L.L.C. v. NaviSite,
Inc., FA 888071 (Nat. Arb. Forum
Feb. 28, 2007) (deciding to consider the respondent’s response even though it
was deficient because it provided useful information to the panel in making its
decision); see also Mattel, Inc. v. Yoon,
FA 967843 (Nat. Arb. Forum June 4, 2007) (deciding to consider a deficient
response because of the need to resolve the dispute between the parties, and
because ruling the response inadmissible due to formal deficiencies would not
be consistent with the basic foundations of due process). Thus, the Panel has decided to consider the
Response in formulation of its decision.
FINDINGS
The Panel finds that the domain names
registered by Respondent are confusingly similar to trademarks in which Complainant
has rights. The Panel also finds that, as the sales representative for China of
Tyco (the Response is unclear as to whether Tyco International or Tyco
Healthcare), Respondent would have/must of had knowledge of the divestiture of Tyco
Healthcare by Tyco International and the change of its name to Covidien prior
to Respondent having registered the domain names <covidien-china.com>, <covidien-china.net>
and <covidien-china.org>
and any trademark rights based on sales by Respondent of Complainant’s goods
would have inured to the benefit of Complainant and would not have given
Respondent any rights in the COVIDIEN trademarks.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
Complainant has provided evidence of trademark registrations for the
COVIDIEN mark with numerous jurisdiction across the world, including with the
Swiss Federal Institute of Intellectual Property (“SFIIP”) (Reg. No. 555,921
issued January 23, 2007), the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,361,986 issued
January 1, 2008, filed April 18, 2007), and with the Hong Kong Special
Administrative Region Trade Marks Registry (hereinafter “Hong Kong trademark
authority”) (Reg. No. 300,844,786 issued August 29, 2007). The Panel finds
these trademark registrations establish Complainant’s rights in the COVIDIEN
mark pursuant to Policy ¶ 4(a)(i). See
Metro. Life Ins. Co. v. Bonds, FA
873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration
adequately demonstrates a complainant’s rights in a mark under Policy ¶
4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat.
Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights
in the GOOGLE mark through its holding of numerous trademark registrations
around the world).
The <covidien-china.com>, <covidien-china.net>
and <covidien-china.org>
domain names each contain
Complainant’s COVIDIEN mark followed by a hyphen, the geographic term “china,”
and the generic top-level domain (“gTLD”) “.com,” “.net” or “.org.” First, the
incorporation of a gTLD is generally considered irrelevant to a Policy ¶
4(a)(i) analysis. Second, the use of a hyphen does not sufficiently distinguish
a disputed domain name. And third, the addition of the term “china” to the
COVIDIEN mark, which describes the area in which Complainant is located and
conducts its business, does not differentiate the disputed domain names.
Complainant operates its business world-wide, including in
Initially, the Panel notes that Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed domain
name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate interests
in the subject domain names.”).
Complainant asserts that Respondent does not own any trademark rights
in the disputed domain names and is not commonly known by the disputed domain
name. The WHOIS information identifies Respondent as “zhaozhongli zhaozhongli c/o zhaozhongli” and
Respondent does not discernibly deny or confirm Complainant’s assertions in its
Response, but does indicate that it had been acting as a representative of,
presumably, the former parent of Complainant’s predecessor company. Without any
further information in the record, the Panel finds that Respondent is not
commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum
Apr. 18, 2007) (concluding that the respondent was not commonly known by the
<thirteen.com> domain name based on all evidence in the record, and the
respondent did not counter this argument in its response).
The disputed domain names resolve to a website that Complainant asserts,
“offers Complainant’s products as well as those of others for sale.”
Additionally, Complainant contends that there are a variety of links to other
websites registered to Complainant and some registered to direct competitors of Complainant. Complainant argues that Respondent is not authorized
to sell Complainant’s products or otherwise market its goods. Upon all of these
grounds, the Panel finds that Respondent is making neither a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) with either the <covidien-china.com>, <covidien-china.net>
or <covidien-china.org>
domain names. See, Skyhawke
Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum
May 18, 2007) (“Respondent is using
the <skycaddy.com> domain name to display a list of hyperlinks,
some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed
domain name does not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Florists’ Transworld
Delivery v. Malek, FA
676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the
<ftdflowers4less.com> domain name to sell flowers in competition with the
complainant did not give rise to any legitimate interest in the domain name); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (the
panel found that the respondent’s appropriation of complainant’s marks to sell complainant’s
and complainant’s competitors’ goods was not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii)).
Complainant argues that Respondent
is using the disputed domain names in an attempt capitalize off of the good
will associated with Complainant’s COVIDIEN mark because (1) the disputed
domain names contain Complainant’s mark in its entirety and (2) they also
contain the geographic locator “china.”
Complainant asserts that the
disputed domain names were registered almost a year after Complainant had
registered the related COVIDIEN mark with the SFIIP and
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <covidien-china.com>, <covidien-china.net>
and <covidien-china.org> domain names be TRANSFERRED
from Respondent to Complainant.
David S. Safran, Panelist
Dated: December 22, 2008
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